All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Tuesday, October 14, 2014

Understanding the Examiner's position is key to advancing prosecution. Before appeal, it's best that the Applicant understands what the Examiner is saying, and that the Examiner understands what the Applicant is saying. Certainly a misunderstanding was at the root of the appeal of an obviousness rejection in Ex Parte Sudhardja. Sometimes the Examiner doesn't explain clearly, sometimes the Applicant just doesn't get it, and sometimes both forces are at work. What happened here?

The application on appeal was directed to a "self-repairing" graphics processing unit (GPU) that included redundancy features. The application was a Continuation-In-Part. The parent application described redundant functional units in an integrated circuit; the CIP added GPU-specific details.

A representative independent claim on appeal – unchanged from the original filing – read:

11. A self-reparable semiconductor including a graphics processing unit (GPU), comprising:
M pixel processors that perform a first function, where M >= 1;
at least one spare pixel processor that performs said first function and that is functionally interchangeable with said M pixel processors; and
switching devices that communicate with said M pixel processors and said at least one spare pixel processor and that can selectively replace any of said M pixel processors with said spare pixel processor when said one of said M pixel processors is inoperable.

In the first Office Action, the Examiner rejected all claims as obvious over a combination of Adamovits and Gordon. According to the Examiner, Adamovits disclosed a telecommunications switch having redundancy features as claimed. The Examiner did acknowledge that the Adamovits device used network, rather than pixel, processors, then turned to Gordon (entitled "Pixel Processor"), which described implementing specific boolean functions on a pixel processor.

The Examiner explained the combination as follows:

Adamovits et al. does not teach the processor being a pixel processor. Gordon teaches of a pixel processor (Fig. 3, 303, col. 4 lines 60-67). It would have been obvious to modify Adamovits et al. sparing system by adding Gordon pixel processor.

As a rationale for combining, the Examiner asserted "[the combination] would provide redundant equipment to ensure acceptable and/or safe operation for the pixel processor."

In a first Response, the Applicant argued that the Examiner's combination did not produce the claimed invention. Since the Examiner specifically relied on "adding Gordon pixel processor" (emphasis added), the Applicant reasoned that the resulting combination included only "a single pixel processor" rather than M pixel processors as claimed. "The Examiner fails to provide any evidence in support of the allegation that modifying Adamovits et al. with the device of Gordon would result in multiple pixel processors" (emphasis added).

In addition to attacking the combination itself, the Applicant also attacked the Examiner's rationale for combining, by highlighting differences in the types of devices: one related to switching network telecommunication data; and one graphics processing. Because of these differences, the Applicant concluded that "there is no suggestion to combine the teachings of Adamovits et al. and Gordon."

The Examiner provided more information in the Final Office Action.

Even though Adamovits et al. teach of a sparing system for processors, Adamovits et al. does not explicitly teach of a pixel processor. Gordon teaches of a pixel processor and [a POSITA] would conclude that it is obvious for Adamovits et al. to include pixel processors in the sparing configuration. Because Adamovits et al. taught of n pieces of equipment to at least one spare piece of equipment, examiner equate that as equal to applicant's M pixel processor where M> 1.

The Applicant appealed. The Appeal Brief reiterated that the Examiner's combination produced a sparing system with only a single pixel processor. The Applicant also elaborated on the no suggestion to combine argument (telecommunications data is unrelated to graphics processing) by noting that "adding a pixel processor [to a telecommunications switch] would provide no forseeable advantages."

The Examiner's Answer reiterated earlier positions, and also and re-stated the combination as: "combine the sparing system for n pieces of equipment of Adamovits with Gordon pixel processor for the sparing of pixel processors in a critical system." (Emphasis added.) Commenting on the unrelatedness of telecommunication switches and pixel processors, the Examiner noted that Adamovits specifically disclosed "the applicability [of sparing techniques] for critical equipment in a wide variety of applications and environments."

The Board affirmed the obviousness rejection, explaining that the Applicant had misunderstood the Examiner's combination:

While perhaps not described in the clearest manner, the Examiner's proposed rejection does not suggest only modifying one processor in Adamovits for a pixel processor as taught by Gordon. The Examiner proposes "combining the sparing system for n pieces of equipment of Adamovits with GOrdon pixel processors for the sparing of pixel processors in a critical system. (Emphasis in original.) Additionally, the Examiner finds that Adamovits teaches using one sparing piece of equipment for each n pieces of equipment in the system, suggesting that this spare equipment substitutes for each n pieces of equipment.

The impact of these statements made by the Examiner signifies that the combination would substitute each of Adamovits sparing processors with a pixel processor as taught by Gordon, predictably yielding multiple spare pixel processors. Thus, looking at the rejection as a whole, combining Gordon with Adamovits, as proposed, also suggests substituting Adamovits' multiple processors with multiple pixel processors such that the substituted spare pixel processors are spare processors for M processors discussed in Adamovits.

Postscript: Upon losing this appeal, the Applicant filed a continuation with narrower claims and successfully prosecuted it to issuance.

My two cents: There are always two angles to attack in an obviousness rejection: Examiner's combination does not teach the claim elements; and rationale to combine. The Applicant here attacked both. The Applicant's does-not-teach argument was based on a faulty understanding of the Examiner's combination. Not sure how that happened, because I understood the combination asserted by the Examiner from the very first Office Action.

I was also spectacularly unpersuaded – at first glance – by the Applicant's rationale-to-combine argument: "adding a pixel processor [to a telecommunications switch] would provide no forseeable advantages." Unpersuaded because my initial reaction was: "the advantage is the redundancy features."

But as I thought about it more, I started wondering if the Applicant was on to something. For one thing, the switch already had redundancy features, so that can't be the reason for using the pixel processors in the switch.

In fact, if you take the Applicant's argument a bit further, seems like you have a good argument for inoperable / unsuitable for intended purpose. Doesn't the telecommunications switch stop working when you replace its network processors with pixel processors? This isn't a case where a little re-work is all that is needed ... network processors have specific design features, useful for packet processing in a switch, that pixel processors don't.

What does seem to make sense is the inverse of the Examiner's combination. Take the redundancy features used in the telecommunications switch of the primary reference, and apply them to the graphics processor environment of the secondary reference.

Is this a different combination? I say it is. It's true there is case law that says the order of references doesn't matter (In re Mouttet, 686. F.3d 1322, 1333 (Fed. Cir. 2012, citing In re Bush, 296 F.2d 491, 496 (CCPA 1961)). But I'm not quibbling about which reference is labeled primary and which is labeled secondary. I'm talking about the fundamental question of how the references are combined to produce the claimed invention.

This Applicant probably loses on the inverse combination as well. So you could say it doesn't matter. But stuff like this does matter.

It matters that the Examiner clearly explains his claim construction. It matters that the Examiner clearly explains how he's combining the references. It matters that the Examiner acknowledges that some limitations aren't present in the combination and he's relying on KSR's "creative inferences" to bridge the gap. And finally, it matters that the Examiner explains his rationale for combining.

Simply put, you can't effectively fight a rejection that you don't fully understand. Until the Federal Circuit rules that a prima facie case requires a complete explanation of the rejection, Applicants should work to extract this complete explanation from the Examiner over the course of prosecution.

Sure, I suppose there are N arguments for obviousness, depending on how you categorize.

At first glance, I'd put your "not within a POSITA's skill" in the same category as "Non-Analogous Art", which I definitely view as Rationale to Combine. Or you could view both as formalities arguments, as you're asking the reference to not be considered rather than reaching the merits.

>It's rarely, if ever, argued

Yeah, "rare" is probably about right. I have run across it from time to time at the PTAB, but don't recall a single case where it won. Don't know off-hand if Applicants have ever won on this at the Fed Cir.

I'm pretty sure you'd need real evidence to make this argument. Probably an expert dec. Even if you submit other refs to show level of skill, you'd need an expert to comment on them, else risk being dismissed as "mere attorney argument".

Ex Parte Jud is the BPAI Informative Opinion on the subject. It's pretty self-serving.In re Vaidyanathan is a Fed Cir. case where the BPAI and Examiner got smacked down on skill level determination.You do need real evidence to win the argument. As always, even if the Examiner has the burden of proof with respect to skill level determination, the PTO and BPAI/PTAB have made this into a very low threshold of proof. Basically, they take the position that if the Examiner cites the art, the Examiner has determined skill level. Even though this should be the Examiner's burden, Applicants have to demonstrate that the art is not within the level of ordinary skill, that the Examiner's approach to skill level determination directly impacted the outcome of the obviousness determination, and present some evidence that the Examiner didn't have a clue about the proper art..

If you're arguing that skill level determination wasn't done, you're inherently arguing that there's no proof that the cited art is within the level of skill. I've read a few BPAI appeals where the applicant argue that a reference wasn't within the level of ordinary skillYou're not being clear, are you looking for a case simply where it was argued that art wasn't within the level of ordinary skill or where the BPAI or Fed Circuit ruled that it wasn't?

I don't know how I can be more clear. Show a CCPA/Fed. Cir./Supreme Court case that says "the art is not within the level of ordinary skill in the art."

You're demonstrating difficulty in understanding what it means to resolve the level of ordinary skill in the art. You cited the Jud and Vaidyanathan cases, so now we know that must be the topic you're trying to comment on. The moderator guessed (wrong) that your nonsense phrase was meant to be something about non-analogous art. The flip side of "you can't effectively fight a rejection that you don't fully understand" is nonsense arguments that are rarely persuasive.

>moderator guessed (wrong) that your nonsense phrase was >meant to be something about non-analogous art.

Not exactly. I said that I consider arguments about level of skill to be *like* NAA args in that both are, in my view, arguing formalities rather than merits. Or maybe a better way of putting it is arguing burden rather than arguing merits.

>The flip side of "you can't effectively fight a rejection that you >don't fully understand" is nonsense arguments that are rarely >persuasive.

Hey, you're preaching to the choir. I ding Applicants *all* the time for making bad arguments. I maintain my original position: do all you can to understand the rejection so that you can effectively fight it.

But now that we're talking about it, I *don't* consider arguments about formalities / burden to be a way of better understanding the rejection Any Applicant who does this and thinks it's persuasive needs to wake up.

But I wonder if some Applicants argue formalities / burden for reasons other than persuading the Board. Perhaps a plan to appeal one of these issues to the Fed Cir?

It seems we're both guessing as to what "the art is not within the level of skill in the art" is supposed to mean. If it's about resolving the level of skill in the art, that's a question of fact, rather than a formality. Analogous art is also a question of fact. I think anon is saying something about the merits of a rejection rather than burden allocation or formalities. But just a guess.

I have no idea why an applicant/appellant would argue something that has never been persuasive to the PTO's reviewing courts. But I've seen allegations such as "if it's so obvious, why hasn't it been done before" persuasive to newbies. Who knows? But cluttering up a response or a brief with things that clearly fail encourages speed-reading and missing what might be gems.

"But now that we're talking about it, I *don't* consider arguments about formalities / burden to be a way of better understanding the rejection Any Applicant who does this and thinks it's persuasive needs to wake up."

I won't argue that applicants and their representatives should try as best they can to understand the rejection (and let's face it, some rejections are so ridiculous they can't be understood, even by the examiner, and I'm sure we've all experienced that situation where you ask the examiner to explain the rejection and the examiner can not), but I don't agree that arguments about the level of ordinary skill in the art or non-analogous art are "formalities." They are genuine issues of material fact. Whether you can successfully demonstrate and/or argue that there is/are genuine issue(s) of fact and the examiner has failed to meet his/her burden goes to the "merits" of the case as much as any other evidence and/or arguments you would submit. IMO.

I don't bother to worry about what "category" my arguments might fit into. I know what the examiner is required to establish a case of unpatentability for every ground of rejection possible and if the examiner fails in any element I will argue that. As I said, to the extent that the examiner's rejection makes any sense I will do my best to understand it (e.g. by conducting an interview, asking for clarification, etc.), but sometimes the best argument an applicant has is, "The rejection makes no sense" and I won't hesitate to argue it. If my argument is that the rejection makes no sense because there is no reason to modify/combine the prior art and/or there is no reasonable expectation of success or whatever, I will clearly state so and address whatever evidence (if even any at all) the examiner has provided and explain why it doesn't meet the preponderance standard.

"But now that we're talking about it, I *don't* consider arguments about formalities / burden to be a way of better understanding the rejection"

You definitely should. Sometimes the rejection and the objections/formalities go hand in hand to address all the shortcomings of the claims. Maybe you wrote the claims like a dum as and then got a rejection on some substance that wasn't near what you wanted it on.

>Sometime the rejection and the objections/formalities >go "hand in hand" with addressing all the shortcomings.

Maybe you're misunderstanding me. Applicants should always make a full and complete reply to the OA. That includes addressing all rejections and all objections (claims, spec, drawings). I'm not sure what "formalities" you're referring to -- maybe stuff like defect in claim to priority or in inventor declaration -- but those too should be addressed by the Applicant.

My mention of "formalities" referred to *Applicant* arguments rather than information provided by an Examiner. I used "formalities" to describe arguments that the Examiner failed to *explicitly* make findings on each of the Graham factors (e.g., level of ordinary skill, differences between claims and prior art).

I don't see how your remark is relevant to Applicant arguments about the formalities of a rejection.

What world do you live in, TP, where you making a bitchy remark to someone gets you what you want from that person? Take a moment. Think about your actions. Once you've apologized for acting like a dick, we can move forward.

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